Ex Parte Schierenbeck et al

Board of Patent Appeals and Interferences

Jul 12, 2012

10899854 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN W. SCHIERENBECK, WILLIAM L. GRILLIOT, and
MARY I. GRILLIOT

____________

Appeal 2010-011016
Application 10/899,854
Technology Center 1700
___________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011016
Application 10/899,854

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 2 and 6 under 35 U.S.C. § 103(a) as
unpatentable over the combined prior art of Grilliot1, and Strack2. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal3:

1. For a protective garment, a composite structure comprising an outer
shell, a moisture barrier disposed inwardly in relation to the outer shell, and
a moisture absorber disposed inwardly in relation to the moisture barrier, the
moisture absorber comprising inner and outer covers that are each moisture-
pervious, wherein a hydrophobic fabric liner is interposed between the
moisture barrier and the outer cover of the moisture absorber and
the hydrophobic fabric liner is configured to prevent the inside of the
moisture barrier from being wetted by moisture from the moisture absorber.

PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). (“[T]he analysis need not seek out precise

1 US 2002/0137412 A1 published September 26, 2002.
2 US 6,369,292 B1 issued April 9, 2002.
3Independent claim 2 similarly recites a composite structure containing a
hydrophobic liner, and additionally recites a thermally insulative liner

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teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir.
1988).
ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
Appellants’ main argument that the prior art does not teach or suggest
the claimed invention, in part because Strack is directed to a disposable
diaper and the like wherein the goal is to prevent a wet or damp feel on the
outer cover (App. Br. 3-4; Reply Br. 1-3), fails to consider the prior art as a
whole. Appellants have not adduced any persuasive technical reasoning or
otherwise in response to the Examiner’s reasonable determination that the
use of a known hydrophobic barrier layer “to contain moisture in adsorbent
cores”, as exemplified in Strack, would have been no more than the
predictable use of a known prior art element for its known function for the
absorbent core of Grilliot in order to confine the liquid (e.g., the fire
fighter’s sweat) in the absorbent core itself (see, e.g., Ans. 5, 7; generally
App. Br.; Reply Br).
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It is well established that ordinary creativity is presumed on the part of
one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). Notably, Grilliot describes that the
superabsorbent core can absorb “copious amounts of human sweat” to
reduce sweat induced stresses on a firefighter, and that the composite
structure can be easily removed for laundering and drying from the outer
shell of the garment. (Grilliot 2, para. [0020]). Appellants have not provided
any persuasive technical reasoning or evidence that an artisan would not
have, using no more than ordinary creativity, used a hydrophobic liner based
on the teachings exemplified in Strack in order to contain the copious
amount of fluid in the removable absorbent core of Grilliott.
In this regard, a preponderance of the evidence supports the
Examiner’s determination that the claimed invention merely applies the
well-known technique of a hydrophobic liner being added to yield
predictable results. See KSR, 550 U.S. at 416 (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
An improvement in the art is obvious if “it is likely the product not of
innovation but of ordinary skill and common sense.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). See also, Perfect Web Techs., Inc.
v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“hold[ing] that
while an analysis of obviousness always depends on evidence that supports
the required Graham factual findings, it also may include recourse to logic,
judgment, and common sense available to the person of ordinary skill that do
not necessarily require explication in any reference or expert opinion.”)
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Accordingly, the preponderance of the evidence supports the
Examiner’s rejection of claims 1, 2 and 6, and we sustain the § 103 rejection
of all the claims on appeal.

DECISION
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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